PRIOR ART AND THE AIA - Sughrue · PRIOR ART AND THE AIA Abraham J. Rosner Sughrue Mion, PLLC A. Old Law or New Law ? The first step in identifying the effective prior art date of

PRIOR ART AND THE AIA Abraham J. Rosner

Sughrue Mion, PLLC

A. Old Law or New Law ?

The first step in identifying the effective prior art date of a reference is to

determine whether the old law or the new law applies, which in turn depends on

the effective filing date of all of the claims in the application.

Namely, if all claims are entitled to an effective filing date prior to March

16, 2013, then the old law applies. However, if even one newly presented claim

depends for its support on material added on or after March 16, 2013, then the

new law applies to all of the claims. The new law will continue to apply, even if

that one new claim is later canceled.

Example 1:

JP-A------------------------|------------------------US-A

Dec. 15, 2012 Mar. 16, 2013 Dec. 15, 2013

In this scenario, US-A claims Paris convention priority from JP-A. All of the

claims in US-A find support in JP-A. The old law applies.

Example 2:

JP-A------------------------|-------------------------PCT-----------------US-A

Dec. 15, 2012 Mar. 16, 2013 Dec. 15, 2013 June 15, 2015

In this scenario, US-A is the national phase of PCT filed Dec. 15, 2013, which

in turn claims priority from JP-A. All of the claims in US-A find support in JP-A.

The old law applies.

Example 3:

JP-A1----------------------|------------------JP-A2--------------------US-A

Dec. 15, 2012 3-16-13 5-1-13 Dec. 15, 2013

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In this scenario, US-A claims Paris convention priority from both JP-A1 and

JP-A2. Some of the claims in US-A are based on material from JP-A2 filed after

March 16, 2013. The new law applies.

Example 4:

JP-A----------------------|-----------------PCT-------------------US-A: CIP bypass

Dec. 15, 2012 3-16-13 12-15-13 1-1-15

In this scenario, PCT claims priority from JP-A. Instead of entering the US

national stage, Applicant files a CIP bypass continuation of the PCT application

which in turn claims priority from JP-A. At least one of the claims depends for its

support on material added with the filing of the CIP application. The new law

applies.

B. Applying the New Law - Prior Art under AIA

We need to consider new §102(a)(1) and §102(a)(2). Apart from public

use/sale, the broadened scope of prior art under the new law will be most

apparent under §102(a)(2).

§102. Conditions for patentability: novelty

(a) NOVELTY; PRIOR ART, - A person shall be entitled to a patent unless

(1) the claimed invention was patented [anywhere in the

world], described in a printed publication [anywhere in the world],

or in public use [anywhere in the world], on sale [anywhere in the

world], or otherwise available to the public [anywhere in the world]

before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a [US] patent issued

under section 151, or in an application for patent [US or PCT

application designating the US] published or deemed published

under section 122(b) [published US or PCT application designating

the US], in which the [US] patent or application [US application or

PCT application designating the US], as the case may be, names

another inventor and was effectively filed before the effective filing

date of the claimed invention.

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Example 1: Applying §102(a)(1)

X

| JP-A-----------------------------------------------US-A

Prior Art May 1, 2013 May 1, 2014

Because US-A has an effective filing date of May 1, 2013 that is on or after

March 16, 2013, the new law applies. X, which is a Japanese kokai laid-open on

Jan. 1, 2010, is prior art against US-A as of its laid-open date.


X

JP-A1---------|-------------|------------------JP-A2--------------------US-A

12-15-12 Prior Art 3-16-13 5-1-13 Dec. 15, 2013



March 16, 2013. The new law applies. X is a Japanese kokai laid-open on Jan. 1

2013. Applicant may antedate X as to those claims which find support in JP-A1.

However, X will still be prior art against those claims which are based on JP-A2.

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The reference in this example is a US application published July 1, 2014 and

which claims priority from a Japanese application filed January 1, 2013. Under

the old law, the published US application, by another, is §102(e) prior art as of its

Jan. 1, 2014 US filing date. Under the new law, the published application is prior

art as of its Jan. 1, 2013 Japanese filing date.

The first thing that we do is to determine whether the old law or the new

law applies. We then place an “X” in the time line indicating the effective prior art

date of the reference. Lastly, we determine whether that reference may be

antedated (by perfecting the claim to priority).

In this example, notice how the “X” moves depending on whether the old

law or the new law applies.

Old Law

1-1-13 3-16-13 1-1-14 7-1-14

Reference: JP-A-----------|----------------------US-A--------------PUB

Prior Art Date: X

Applicant: JP-A---|----------------------------------US-A

New Law

1-1-13 3-16-13 1-1-14 7-1-14

Reference: JP-A-----------|----------------------US-A--------------PUB

Prior Art Date: X

Applicant: JP-A-----------------------US-A

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Example 4: Applying 102(a)(2)

New Law

1-1-13 3-16-13 1-1-14 7-1-14

Reference: JP-A-----------|----------------------------US-A--------------PUB

Prior Art Date: X

Applicant: JP-A1--------------------|------JP-A2----------US-A

12-15-12 5-1-13 12-15-13



March 16, 2013. The new law applies. The reference in this example is a US

application published July 1, 2014 and which claims priority from a Japanese

application filed January 1, 2013. Under the new law, the published application is

prior art as of its Jan. 1, 2013 Japanese filing date.

We can antedate the reference with respect to those claims which find

support in JP-A1, but not with respect to those claims which are based on

material added with the filing of JP-A2.

Example 5: Invoking New Law by Presenting a Claim Based on Material Added

on or After March 16, 2013

JP-A1 filed Dec. 15, 2012 discloses that Y of formula (1) is a 5- or 6-

member heterocyclic group including at least one atom selected N, S and O. No

examples are given. JP-A2 filed May 1, 2013 supplements the definition of Y to

describe that Y is pyridinyl in a preferred embodiment. US-A filed Dec. 15, 2013

claiming priority from both JP-A1 and JP-A2 is filed with claims that are fully

supported by JP-A1 (i.e., Y is a 5- or 6-member heterocyclic group). At this point,

the old law applies.

During prosecution, Applicant adds a claim which recites that Y is pyridinyl.

The new law now applies.

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Using the date pattern of Example 4, we see that a reference that was not

prior art when US-A was filed (old law) becomes prior art once Applicant adds the

claim which recites that Y is pyridinyl (invoking the new law).

Old Law: All claims find support in JP-A1

1-1-13 3-16-13 1-1-14 7-1-14


Prior Art Date: X


12-15-12 5-1-13 12-15-13

New Law: Applicant adds a claim based on JP-A2

1-1-13 3-16-13 1-1-14 7-1-14


Prior Art Date: X


12-15-12 5-1-13 12-15-13

We can antedate the reference with respect to those claims which find

support in JP-A1, but not with respect to those claims which are based on

material added with the filing of JP-A2.

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Example 6: WIPO Publication Language no Longer Relevant

Old Law: No §102(e) date if WIPO publication was not in English

1-1-10 1-1-11 7-1-11

Reference: JP-A --------- PCT ---------- WIPO Pub -------------- US Nat Stage

(Japanese)

Prior Art: X §102(a)

Applicant: JP-A --------------------- USA

Old Law: WIPO publication in English and PCT designates the US

1-1-10 1-1-11 7-1-11

Reference: JP-A --------- PCT ---------- WIPO Pub -------------- US Nat Stage

(English)

Prior Art: X §102(e) X §102(a)


New Law: Prior art date carries back to PCT priority application

1-1-14 1-1-15 7-1-15

Reference: JP-A --------- PCT ---------- WIPO Pub ------------- US Nat Stage

(Japanese)

Prior Art: X §102(a)(2) X §102(a)(1)


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PRIOR ART AND THE AIA - Sughrue · PRIOR ART AND THE AIA Abraham J. Rosner Sughrue Mion, PLLC A. Old Law or New Law ? The first step in identifying the effective prior art date of